NOTE TO THE FILE
Sent to TICRS as Serial Number: 88517707SERIAL NUMBER: 88517705
DATE: 03/09/2020
NAME: canderson
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
X Changed TRADEUPS to: amend ID
From: Coleman, Brian (Perkins Coie) <BColeman@perkinscoie.com>
Sent: Monday, March 9, 2020 1:13 PM
To: Anderson, Cassondra <Cassondra.Anderson@USPTO.GOV>
Subject: RE: U.S. Trademark Application Serial Nos. 88517702, 88517705, 88517706 and 88517707
Hey Cassondra! Thank you for the prod. We agree to your proposed amendments.
Brian Coleman | Perkins Coie LLP
PARTNER
3150 Porter Drive
Palo Alto, CA 94304-1212
D. +1.650.838.4441
F. +1.650.838.4641
From: Anderson, Cassondra <Cassondra.Anderson@USPTO.GOV>
Sent: Monday, March 9, 2020 9:40 AM
To: Coleman, Brian (PAO) <BColeman@perkinscoie.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88517702, 88517705, 88517706 and 88517707
Brian,
Just following up on the below.
Thanks,
Cassie
From: Anderson, Cassondra
Sent: Wednesday, March 4, 2020 1:50 PM
To: bcoleman@perkinscoie.com
Subject: U.S. Trademark Application Serial Nos. 88517702, 88517705, 88517706 and 88517707
Brian,
I have received and reviewed the incoming responses for the 4 co-pending applications referenced above. They are all nearly good to go, but I caught a few minor mistakes that I can correct via Examiner’s Amendment:
1) The wording “Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices” belongs in Class 42, not Class 38.
2) The wording “Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks” needs to indicate downloadable in Class 09 or “providing online, non-downloadable software” in Class 42.
3) The wording “downloadable software and services for capturing user reactions to messaging” needs to delete “services” from Class 09 and, if desired, add “providing online, non-downloadable software for capturing user reactions to messaging” in Class 42.
Thus, I propose the following changes:
09: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Downloadable software for communication to maintain and strengthen relationships; Downloadable s
Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; downloadable digital stationary software; downloadable softwareand servicesfor capturing user reactions to messaging
38: Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; communication services by mobile phones; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and online electronic bulletin boards for transmission of messages among users in the field of social networking; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with the intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer the website user on a mobile device or the Internet to other local and global online locations;
- Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices
42: Providing online, non-downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Providing online, non-downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Providing online, non- downloadable computer software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Providing online, non- downloadable digital stationary software; Providing online, non-downloadable computer software for capturing user reactions to messaging; Platform as a service (PAAS) featuring computer software platforms for facilitating messaging and communications adhering to a social contract of predefined tenor and content; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating an on-line community for registered users to form virtual communities to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, providing on-line facilities for real-time interaction with others for the purpose of organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non- downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer technology services, namely, providing temporary use of non- downloadable software to verify and authenticate an individuals identity
.; Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; providing online, non-downloadable software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; providing online, non-downloadable software for capturing user reactions to messaging
45: no change
Please let me know by Friday if your client agrees, and I will make the necessary changes via Examiner’s Amendments.
Cassie Anderson
Examining Attorney
Law Office 103
(571) 272-5595
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